Sharp Kabushiki Kaisha

Patent Trials and Appeals Board

Nov 4, 2021

2020004116 (P.T.A.B. Nov. 4, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/834,362 12/07/2017 Masafumi ARAMOTO 1152-0400PUS2 8472
2292 7590 11/04/2021
BIRCH STEWART KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
EXAMINER
CHANG, KAI J
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
11/04/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAFUMI ARAMOTO and HIROKAZU NAOE
Appeal 2020-004116
Application 15/834,362
Technology Center 2400
Before MARC S. HOFF, LARRY J. HUME, and JOYCE CRAIG,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–10, which are all claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as SHARP
KABUSHIKI KAISHA. Appeal Br. 1.
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STATEMENT OF THE CASE2
The claimed subject matter is directed to “Mobile Station, Position
Management Apparatus, Subscriber Information Management Apparatus,
Mobile Communication System, Access Control Apparatus, Home Base
Station and Communication Method.” See Spec. (Title). In particular,
Appellant’s disclosed embodiments and claimed invention relate to:
[A] mobile communication system of the present invention is a
mobile communication system in which a home network having
a home base station to which a mobile terminal is connected
and a core network to which a subscriber information
management apparatus, a position management apparatus and
an access control apparatus are connected, are connected via a
foreign network, characterized in that the subscriber
information management apparatus includes: a subscription
storage that stores, as subscription information, an APN
(Access Point Name) for identifying a home base station and a
service class available for the mobile terminal, in
correspondence with a mobile terminal identifier for identifying
the mobile terminal; a positional information update request
receiver for receiving a positional information update request of
the mobile terminal from the position management apparatus;
and, a positional information response transmitter that extracts a
service class corresponding to a mobile terminal identifier
included in the positional information update request, from the
subscription storage and transmits a positional information

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Nov. 13, 2019); Reply Brief (“Reply Br.,” filed May 13, 2020); Examiner’s
Answer (“Ans.,” mailed Mar. 13, 2020); Final Office Action (“Final Act.,”
mailed Mar. 15, 2019); and the original Specification (“Spec.,” filed
Dec. 7, 2017) (claiming benefit of PCT/JP2010/060449, filed
June 21, 2010).
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update response included with the extracted service class to the
position management apparatus.
Spec. ¶ 25.
[I]t is therefore an object of the present invention to
provide a mobile communication system and the like in which,
for a plurality of services provided through local IP access
functionality of a home base station, the owner of a home base
station or the mobile network operator can designate the access
right for each service, and the home base station to which
communication data is transferred based on the designated
access right and a mobile terminal based on the designated
access right can select a communication path.
Spec. ¶ 24.
Exemplary Claims
Claims 1 and 7, reproduced below, are illustrative of the subject
matter on Appeal (emphases added to contested prior-art limitations):
1. A User Equipment (UE) in a communication
system, wherein the communication system is configured to
contain:
the UE;
a base station;
a core network;
a network with which the UE is communicatable via the
base station without passing through the core network; and a
foreign Packet Data Network (PDN), and
the communication system is configured to provide: a
first connection service for directly connecting from the base
station to the network; and
a second connection service for connecting to the foreign
PDN without passing through the core network, wherein
the UE is configured to store a first Access Point Name
(APN) in correspondence with allowance information
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indicating that the first connection service is allowed and the
second connection service is disallowed,
the UE is configured to transmit a PDN Connectivity
Request message containing the first APN to the core network,
in order to request an establishment of a PDN com1ection,
the UE is configured to receive a response with respect to
the PDN Connectivity Request message containing the first
APN and establish a first PDN connection with an access
control apparatus contained in the base station, and
the UE is configured to transmit data to and receive data
from the network, through the first PDN connection.
7. A base station in a communication system,
wherein the communication system is configured to contain:
a User Equipment (UE);
the base station;
a core network;
a network with which the UE is communicatable via the
base station without passing through the core network; and
a foreign Packet Data Network (PDN), and
the communication system is configured to provide: a
first connection service for directly connecting from the base
station to the network; and a second connection service for
connecting to the foreign PDN without passing through the core
network, wherein
the base station is configured to receive a bearer
establishment request message containing a first Access Point
Name (APN) in correspondence with allowance information
indicating that the first connection service is allowed and the
second connection service is disallowed from a position
management apparatus within the core network, the bearer
establishment request message being a response to a PDN
Connectivity Request message transmitted from the UE,
the base station is configured to establish a first PDN
connection for the first connection service with the UE.
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Appeal Br. (Claims App.).3
REFERENCES
The Examiner relies upon the following prior art as evidence:
Name Reference Date
Kant US 2006/0133319 A1 June 22, 2006
Bi et al. (“Bi”) US 2010/0284299 A1 Nov. 11, 2010
REJECTION4
Claims 1–10 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Bi and Kant. Final Act. 3.

3 We note somewhat unusual claim recitations, in that claim 1 recites, for
example, “[a] User Equipment (UE) in a communication system, wherein
the communication system is configured to contain: the UE; a base station; a
core network; [and] a network. . . .” (emphasis added). While the claim
preamble appears to direct the claim to a User Equipment, the body of the
claim is directed to the structure of the communication system of which the
UE is claimed as being a part. See claim 1. Similar observations pertain to
independent claim 4 (“A position management apparatus”) and independent
claim 7 (“A base station in a communication system”). All three independent
claim appear to be directed to describing a communications system, rather
than the UE, Position Management Apparatus, or Base Station as in their
respective preambles.
4 In the event of further prosecution, we invite the Examiner’s attention to
determining whether the type of information claimed as being stored in
claim 1, for example, affects the structure of the claimed UE, (e.g., “the UE
is configured to store a first Access Point Name (APN) in correspondence
with allowance information”), i.e., is the recitation of the type of data
received and stored merely non-functional descriptive material. Although the
Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference
should be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) § 1213.02.
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CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 7–13) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the obviousness
rejection of claims 1–6 on the basis of representative claim 1, and we decide
the appeal of the obviousness rejection of claims 7–10 on the basis of
representative claim 7.
ISSUES AND ANALYSIS
Based upon our review of the record, we find a preponderance of the
evidence supports particular arguments advanced by Appellants with respect
to claims 1–10 for the specific reasons discussed below. We highlight and
address specific findings and arguments regarding claim 1 and 7 for
emphasis as follows.
1. § 103(a) Rejection of Claims 1–6
Issue 1
Appellant argues (Appeal Br. 7–12; Reply Br. 2–4) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Reilly, Bates, Sylvain, Morrill, and Butcher is in error.
These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests “[a] User Equipment (UE) in a communication system” wherein,
inter alia, “the UE is configured to store a first Access Point Name (APN) in
correspondence with allowance information indicating that the first
connection service is allowed and the second connection service is
disallowed,” as recited in claim 1?
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Principles of Law
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” Id. at 425.
In KSR, the Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill . . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
Further, the relevant inquiry is whether the Examiner has set forth
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
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Analysis
The Examiner cites the Bi reference at paragraph 20 as teaching or
suggesting the contested limitation, i.e., “the UE is configured to store a first
Access Point Name (APN) (the mobile system stores a list of closed
subscriber group (CSG) identifiers, detailing which home network base
station the mobile system is accessible, paragraph [0020]).” Final Act. 5.
Appellant contends the Examiner erred because a Closed Subscriber
Group identifier (CSGID) is different from an Access Point Name (APN)
i.e., “the claimed ‘first Access Point Name (APN)’ is different from Bi’s ‘list
of closed subscriber group (CSG) identifiers’ at least because, as illustrated
in Fig. 8 of the present application, APN and CSGID are two distinct
elements.” Appeal Br. 7.
Figure 8 of Appellant’s disclosure is replicated below:

“[FIG. 8] is a chart showing one example of a subscription [database]
DB of an MME [Mobility Management Entity] in the first embodiment.”
Spec. 10:2–3.
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Figure 6 of Appellant’s disclosure is replicated below:

“[FIG. 6] is a chart showing one example of a subscription DB of an
HSS [Home Subscriber Service] in the first embodiment.” Spec. 9:26–27.
Paragraphs 67 and 74 of the Specification provide context concerning
the differences between an APN and a CSGID as relates to Figures 6 and 8
of Appellant’s disclosure:
Here, FIG. 6 shows one example of subscription DB 352.
Subscription DB 352 records, for UEs managed by mobile
communication system 1, the UE’s identifier (e.g., “UE l”
generated from IMSI (International Mobile Subscriber Identify:
subscriber identification information) and the like), the CSGID
(e.g., “CSGID2”) allotted to home base station 60 which the UE
is allowed to access, the APN (e.g., “ALICE’S_HOME”) for
connection to the local IP access provided by the home base
station 60, and either “allowed” or “disallowed”, i.e., the status
of the availability of service (e.g., “class 1: internet connection
service” and “class 2: home network connection service”)
through the local IP access.
Spec. ¶ 67. “FIG. 8 is a chart showing one example of subscription DB 452.
The structure of the database is the same as that of subscription DB 352 held
by HSS 30 as shown in FIG. 6. However, information on UEs to be
managed by the MME 40 only is temporarily stored.” Spec. ¶ 74.
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In contrast, Bi discloses, in paragraph 20, as relied upon by the
Examiner for disclosing the claimed storing of an APN:
A home, office, or other localized setting may maintain a
home network 108. The home network 108 may be an at least
partially wireless local area network (LAN) connected to the
core mobile network 102. The home network 108 may be
connected to the core mobile network 102 via one or more
home network base stations 110, such as a home NodeB (HNB)
or a home evolved NodeB (HeNB). The mobile system 104
may use the home network base station 110 to access either the
mobile network 102 or the home network 108 through the home
network base station 110. The home network base station 110
may allow a mobile system 104 access, if the mobile system
104 is a part of a closed subscriber group (CSG) associated with
the home network 108. The mobile system 104 may store a list
of CSG identifiers (ID), or a CSG ID list, detailing which home
network base station 110 the mobile system 104 may access.
The network operator server 106 may store the CSG ID list to
administer access to the various home networks.
Bi ¶ 20.
However, we see no teaching or suggestion in Bi paragraph 20 that
the user equipment stores an APN as claimed, and we are persuaded by
Appellant’s argument that an APN and a CSG Identifier are different
elements, particularly in light of Figures 6 and 8 of Appellant’s drawings
and related disclosure quoted above.5

5 In further support of Appellant’s contention the Examiner erred, compare
https://en.wikipedia.org/wiki/Access_Point_Name (“An Access Point Name
(APN) is the name of a gateway between a GSM, GPRS, 3G and 4G mobile
network and another computer network, frequently the public Internet.”)
with https://en.wikipedia.org/wiki/Closed_subscriber_group (“A closed
subscriber group (CSG) is a limited set of users with connectivity access to a
femtocell. When a femtocell is configured in CSG mode, only those users
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In the Answer, the Examiner modifies the rejection by citing
paragraph 37 of Bi. The Examiner states “[t]he APN is an identifier that
indicates the access point, as such, the mobile system stores a list
"identifiers" which provides the access of the service.” Ans. 3. Paragraph
37 of Bi discloses:
The mobile system 104 may use an identity related to the
home based IP network 652, such as an access point name
(APN) 652, to determine availability of a home network 110
and initiate establishment of a new PDN [Packet Data Network]
connectivity towards the home network 110 through the V-
PGW 510 within the home network base station 110. Once the
mobile system 104 sends a PDN connectivity request to the
APN associated with the home network 108, the MME 502 may
communicates with the home network base station 110 and the
mobile system 104 to establish the bearer between the mobile
system 104 and the home network 108.
Bi ¶ 37.
We note Bi paragraph 37 mentions an APN as an identifier that
indicates the access point. However, Bi does not teach or suggest storing “a
first Access Point Name (APN) in correspondence with allowance
information indicating that the first connection service is allowed and the
second connection service is disallowed,” as recited in claim 1, and as
argued by Appellant. Reply Br. 3 (emphasis added).
The Examiner cites Kant as teaching or suggesting the APN is stored
in a home location register (HLR) and that the storage of the APN also
provides the recited storage of corresponding allowance information. Final

included in the femtocell’s access control list are allowed to use the
femtocell resources. On the other hand, a femtocell can be also configured in
Open Access mode, in which any user is allowed access to the femtocell.”).
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Act. 6; Ans. 4–5.6 The Examiner further finds, “[i]n addition, the user
database containing the user profile can be stored outside the HLR in
another configuration (paragraph [0042]). As such, the user profile can be
configured to be stored in the HLR (i.e.[,] position management apparatus)
or in another configuration, stored in the mobile station (i.e.[,] user
equipment).” Ans. 5 (emphasis added).
Appellant responds to the Examiner’s Answer by arguing:
Kant supplies no support for the notion of storing an APN, or
even a user profile that includes an APN, in a mobile station or
UE. Cited paragraph [0042] of Kant instead describes an
embodiment in which “the set of service WLAN APNs need be
stored outside the HLR (for example, in the RAC).” An RAC
(Radio Access Controller) “is a 3GPP AAA server,” not a
mobile station or UE. (Kant, ¶0038].) The Examiner’s Answer
thus fails, even in presenting new arguments, to show how
modifying the teachings of Bi with features of Kant renders
obvious every feature of the present claim 1.
Reply Br. 3–4.
We disagree with the Examiner’s finding that Kant teaches or
suggests storing an APN in the UE as claimed, because the alternative
embodiment in Kant teaches storing the information in the RAC instead of
the HLR, which is not storage within the UE, as recited in claim 1.
Based upon the findings above, on this record, we are persuaded of at
least one error in the Examiner’s reliance on the cited prior art combination
to teach or suggest the disputed limitation of claim 1, such that we find error
in the Examiner’s resulting legal conclusion of obviousness. Therefore, we

6 We note APNs stored in Kant’s HLR resides in a central network
database, and not in the User Equipment (UE). See Kant ¶ 8.
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do not sustain the Examiner’s obviousness rejection of independent claim 1,
and independent claim 4 which recites the disputed limitation in
commensurate form. For the same reasons, we do not sustain the
Examiner’s rejection of dependent claims 2, 3, 5, and 6 which variously
depend from independent claims 1 and 4.
2. § 103 Rejection of Claims 7–10
Issue 2
Appellant argues (Appeal Br. 12–13) the Examiner’s rejection of
claim 7 under 35 U.S.C. § 103(a) as being obvious over the combination of
Reilly, Bates, Sylvain, Morrill, and Butcher is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art discloses “[a] base
station in a communication system” wherein, inter alia, “the base station is
configured to receive a bearer establishment request message containing a
first Access Point Name (APN) in correspondence with allowance
information indicating that the first connection service is allowed and the
second connection service is disallowed from a position management
apparatus,” as recited in claim 7? (emphasis added).
Analysis
With respect to the disputed limitation of claim 7, the Examiner finds
Bi paragraphs 37 and 43 teach or suggest “a bearer establishment request
message containing a first Access Point Name (APN), the bearer
establishment request message being a response to a PDN Connectivity
Request message transmitted from the UE.”
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Appellant responds:
Nothing in [paragraphs 37 or 43 of Bi] discloses or
suggests that a base station receives a bearer establishment
request that contains a first APN. Nor does this citation indicate
that the “identity” allegedly received in an (undisclosed) bearer
establishment request message is received by a base station “in
correspondence with allowance information” that indicates
allowance or disallowance of first and second connection
services, much less the allowance and disallowance specifically
recited by the claims. Accordingly, Bi does not disclose or
suggest the features to which it is applied. Kant is not asserted
to (and does not, in any case) remedy this deficiency of Bi.
Appeal Br. 13.
We have reviewed the Bi reference, are persuaded by Appellant’s
arguments, and find no teaching or suggestion of the disputed limitation in
Bi, particularly in paragraphs 37 and 43.
Based upon the findings above, on this record, we are persuaded of at
least one error in the Examiner’s reliance on the cited prior art combination
to teach or suggest the disputed limitation of claim 7, such that we find error
in the Examiner’s resulting legal conclusion of obviousness. Therefore, we
so not sustain the Examiner’s obviousness rejection of independent claim 7,
and independent claim 8 which recites the disputed limitation in
commensurate form. For the same reasons, we do not sustain the
obviousness rejection of dependent claims 9 and 10 which respectively
depend from independent claims 7 and 8.

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CONCLUSION
We REVERSE the Examiner’s rejection. More specifically,
Appellant has persuasively argued that the Examiner erred with respect to
obviousness Rejection R1 of claims 1–10 under 35 U.S.C. § 103(a) over the
cited prior art combination of record, and we do not sustain the rejection.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
References/
Basis Affirmed Reversed
1–10 103(a) Bi, Kant 1–10
REVERSED